Appeal No. 1997-3335 Page 8
Application No. 08/315,454
Claim 1 also requires that the dielectric film formed comprise substantially uniformly distributed
first and second phases. The first phase must contain a plurality of barium and/or strontium titanate
grains and the second phase must principally comprise boron oxide. The Examiner reasons that the
combination of references teaches identical precursors and similar temperature ranges and thus the
perovskite film as recited and claimed would be inherently obtained (Answer, page 8). However,
assuming one of ordinary skill in the art would combine the teachings of the references and use the
boron compounds of the secondary references in the process of Lipeles, one of ordinary skill in the art
would be required to perform experimentation to optimize the level of boron for reducing the annealing
temperature. While it is possible that the result would be a first phase of barium titanate grains and a
second phase of boron oxide, the phases being substantially uniformly distributed, it is not a certainty.
“Inherency ... may not be established by probabilities or possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not sufficient.” Mehl/Biophile Int’l Corp. v.
Milgraum, 192 F.3d 1362, 1365, 52 USPQ2d 1303, 1305 (Fed. Cir. 1999). See also Glaxo, Inc.
v. Novopharm Ltd., 830 F.Supp. 871, 874, 29 USPQ2d 1126, 1128 (E.D. N.C. 1993), aff’d, 34
USPQ2d 1565 (Fed. Cir.), cert. denied, 516 U.S. 988 (1995)(“[I]t is not sufficient that a person
following the disclosure sometimes obtain the result set forth in the claim, it must invariably happen.”).
With respect to the other independent claim, claim 8, the Examiner adds Kulwicki and Kim to
the rejection but does not indicate where, in any of the prior art references relied upon, a process is
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